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In its companion Decisions in IPR2015-00720 and IPR2015-00817, the Board denied institution of inter partes review of two Acorda Therapeutics pharmaceutical patents. The Board was “not persuaded that Petitioner has shown that the Goodman and Hayes posters constitute prior art.” Thus, Petitioner had “not established that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition[s], as required under 35 U.S.C. § 314(a).”

Petitioner had asserted that both posters constituted prior art under 35 U.S.C. § 102(b) based on dates the posters “were ‘presented’” due to alleged admissions made in the Patent Owner’s IDSs submitted during prosecution. Patent Owner countered, however, that “even if Petitioner claims that the posters were displayed at meetings, this does not establish that the posters are printed publications” that qualify as prior art under § 102. The Board agreed with Patent Owner.

First, the Board noted that “the submission of an IDS does not constitute an admission that a cited reference is material prior art.” Indeed, the IDSs themselves stated expressly that “[i]dentification of the listed references is not meant to be construed as an admission of Applicants or Attorneys for Applicants that such references are available as ‘prior art’ against the subject application.”

Second, the Board was not persuaded that the posters qualified as prior art. A determination of whether a reference is a prior art “printed publication” involves a “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Factors to consider include:

[1] the length of time the display was exhibited, [2] the expertise of the target audience, [3] the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and [4] the simplicity or ease with which the material displayed could have been copied. Id.

Here, Petitioner presented insufficient evidence as to how long the posters were “presented,” “the expertise of the target audience,” “any reasonable expectation that one could have copied the poster material, or evidence regarding the ease with which the poster material could have been copied.” Indeed, the Board’s independent “review of the posters themselves indicates that they both present relatively dense material in a small space.” In sum, the Board was “not persuaded that Petitioner has made a threshold showing that the posters were sufficiently publicly accessible to qualify as a ‘printed publication’ under § 102(b).”

The Petitions were therefore denied. The Board’s denial of the two petitions is not an appealable issue.

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